APLF IP Law Bugle

IP Law Updates

• US Department Of Justice To Form Task Force To Address IP Crimes
• Newsflash: UWA v Gray – Special Leave To Appeal Denied

For IP Practitioners — Notes and Comments on Improving Practice Skills

• The Great Texas Escape
• Following On Egyptian Goddess, Seaway Holds That The Sole Test For Design Patent Invalidity Under 35 U.S.C. § 102 Is The “Ordinary Observer” Test
• Industrial Applicability: UK Court Of Appeal Disagrees With EPO
• Not All Errors Are Obvious
• Australian Patent Interlocutory Injunctions – Infringers Beware!
  
• What Does It Mean To Be “Green”?

Member Firms in the News

• Kelly L. Miranda Joins Ridout & Maybee LLP
• Hovey Williams Announces Freeze In Billing Rates For Second Consecutive Year

APLF News

• APLF LinkedIn Group

US Department Of Justice To Form Task Force To Address IP Crimes

On February 12, 2010, U.S. Attorney General Eric Holder announced the formation of a new Department of Justice Task Force on Intellectual Property as part of a Department-wide initiative to confront the growing number of domestic and international intellectual property (IP) crimes. The Task Force, to be chaired by the Deputy Attorney General, will focus on strengthening efforts to combat intellectual property crimes through close coordination with state and local law enforcement partners as well as international counterparts. It will also monitor and coordinate overall intellectual property enforcement efforts at the Department, with an increased focus on the international aspects of IP enforcement, including the links between IP crime and international organized crime. Building on previous efforts in the Department to target intellectual property crimes, the Task Force will also serve as an engine of policy development to address the evolving technological and legal landscape of this area of law enforcement.

You can read the more at http://www.justice.gov/opa/pr/2010/February/10-ag-137.html

Newsflash: UWA v Gray – Special Leave To Appeal Denied

On Friday 12 February 2010, The High Court of Australia denied the University of Western Australia special leave to appeal the Full Federal Court’s decision in UWA v Gray.

Accordingly, the decision of the Full Federal Court that UWA has no claim of ownership over the inventions developed by Gray, who was previously a UWA academic, stands.

An article on the Full Federal Court’s original decision by F B Rice & Co. can be found at http://www.fbrice.com.au/servlet/Display?p=460

A full article article on the High Court’s decision to deny UWA special leave will be issued in due course.

The Great Texas Escape

David Emery, Sughrue Mion PLLC -
demery@sughrue.com

The Federal Circuit sends a strong message by transferring these two cases from this venue typically favored by plaintiffs. In this pair of decisions, the Federal Circuit castigated the district courts’ analyses supporting their decisions to deny petitioners’ motions to transfer venue.

First published in the Sughrue Review, December 2009

» Read more

Following On Egyptian Goddess, Seaway Holds That The Sole Test For Design Patent Invalidity Under 35 U.S.C. § 102 Is The “Ordinary Observer” Test

Michael Raucci, Sughrue Mion PLLC -
mraucci@sughrue.com

In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), the Federal Circuit held that “the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement” and that “the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.” Egyptian Goddess, 543 F.3d at 678.

First published in the Sughrue Review, December 2009

» Read more

Industrial Applicability: UK Court Of Appeal Disagrees With EPO

Jane Hollywood, Kilburn & Strode LLP -
jhollywood@kstrode.co.uk

In 2005 the EPO granted HGS a European patent (EP0939804) relating to the protein Neutrokine-a.

The patent contained the correct nucleotide and amino acid sequences for Neutrokine-a but the sequences had been obtained only by prediction based on other members of the TNF ligand superfamily using bioinformatic techniques. The patent listed a wide range of activities and uses for the novel protein (and antibodies to the protein) but, again, these activities and uses were pure prediction, based on the properties of other TNF ligand proteins.

» Read more

Not All Errors Are Obvious

Jacqueline Warner, F B Rice & Co. – jwarner@fbrice.com.au and Chris Owens, F B Rice & Co. – cowens@fbrice.com.au

Key Points

• Claims of an accepted application or granted patent may be broadened in scope as a result of amendment only if the amendment is for the purpose of correcting i) “a clerical error” or ii) an “obvious mistake”
• In order to avoid the refusal of an amendment, it is critically important to decide whether the amendment sought is the result of a clerical error or an obvious mistake.
• This case highlights how the reason for the correction is not always easily identified and that a careful consideration of the facts is required.

» Read more

Australian Patent Interlocutory Injunctions – Infringers Beware!

Rachel Garcia, F B Rice & Co. – rgarcia@fbrice.com.au

Key Points

• There is a growing trend for the Federal Court of Australia to grant interlocutory injunctions in patent cases.
• Where a prima facie case of infringement is made by the patentee, the Court is more likely to restrain the alleged infringer from selling the alleged infringing goods.
• Potential infringers should consider either obtaining a declaration of non-infringement or commencing an action to revoke a patent before engaging in any potentially infringing actions.
• Patentees should consider taking action early to make others aware of the existence of a patent as this is likely to factor into the Court’s consideration of the balance of convenience.

» Read more

What Does It Mean To Be “Green”?

Mark Deboy, Sughrue Mion, PLLC – mdeboy@sughrue.com

On December 8, 2009, the U.S. Patent and Trademark Office (USPTO) initiated a Pilot Program for Green Innovations, which according to USPTO Director David Kappos, will give applications in the program “a significant savings in pendency, which will help bring green innovations to market more quickly.”

First published in Protecting the Universe of ‘Green’ Ideas, January 2009

» Read more

Kelly L. Miranda Joins Ridout & Maybee LLP

• Ridout & Maybee LLP is pleased to announce that Kelly L. Miranda has joined our Ottawa office as an associate lawyer and patent agent. Kelly has over eight years of experience in the high tech and electrical fields, and will be providing clients with strategic advice in these areas as well as preparing, filing and prosecuting patent applications.

Hovey Williams Announces Freeze In Billing Rates For Second Consecutive Year

• Overland Park, KS—The Kansas City area-based intellectual property law firm of Hovey Williams LLP has announced its decision to freeze billing rates of all senior partners for the 2010 calendar year. The firm is also freezing standard flat fee services.”Although there have been increasing signs of economic recovery, we are aware that clients are still spending their hard-earned dollars very carefully and continually looking for ways to minimize costs,” says Tracy L. Bornman, Partner of Hovey Williams. “With this in mind, the partners at Hovey Williams decided to freeze billing rates again in 2010. We strive to maintain a cost-conscious approach to our client service and want clients to know we always have their best interests in mind.”2010 marks the second consecutive year Hovey Williams has frozen its billing structure. The firm made a similar announcement in January 2009, a time when many firms were actually increasing their billing rates despite the unstable economic conditions.Dating back to the firm’s inception in 1929, just weeks before the start of the Great Depression, Hovey Williams has prided itself on being sensitive to client concerns during difficult economic times. The firm’s particular focus on IP law further enhances its cost-savings approach through its group of specialized attorneys with varying technical backgrounds and levels of experience, allowing the firm to efficiently serve a broad range of clients. Additionally, Hovey Williams’ Midwest office location offers a low overhead and cost of living, providing clients access to world-class service at more affordable rates.Hovey Williams LLP is an intellectual property law firm specializing in patents, trademarks, copyright, trade secret, and IP litigation. The firm’s practice before the U.S. Patent and Trademark Office includes patent and trademark prosecution, appeals, oppositions, cancellations, and interferences. In addition, Hovey Williams has appeared before the United States Supreme Court, regional Courts of Appeal including the Court of Appeals for the Federal Circuit, and state courts. The firm comprises more than 20 attorneys and patent analysts, including 12 partners. For more information about Hovey Williams, visit www.hoveywilliams.com.

APLF LinkedIn Group

• APLF would like to remind attorneys of member firms and corporate counsel of the exclusive APLF LinkedIn Group, which can be found on the LinkedIn social networking site by searching “APLF” or clicking on the link below. We would also like to announce that an Associates Subgroup has been added to the APLF LinkedIn Group, which is exclusive to associates at APLF member firms. The APLF Associates Group is a forum for associates at APLF member firms to network and correspond with one another in a less formal (i.e., no partners) setting.Join the APLF LinkedIn Group at the following link: http://www.linkedin.com/groups?home=&gid=2012669&trk=anet_ug_hm